Takeaway: In order to discover additional documents regarding privity, the patent owner does not have to prove privity, but does have to show evidence tending to show beyond speculation that there could have been privity between petitioner and a third party.

In its Order, the Board granted Patent Owner’s Motion for Additional Discovery of an indemnification agreement between Petitioner and Comcast. The Board discussed the only issue in dispute – whether there exists more than a “mere possibility” or “mere allegation that something useful [to the proceeding] will be found,” which requires the party seeking discovery to already be in possession of evidence tending to show beyond speculation that in fact something favorable in substantive value to a contention of the movant will be discovered.  The Board noted that the existence of the indemnification agreement is not disputed; therefore, the question is whether Patent Owner has brought forth a threshold amount of evidence tending to show that the indemnification agreement supports the contention that Petitioner is controlled or could have exercised control in the prior litigation where Comcast was a defendant.

Petitioner argued that an agreement alone cannot give rise to privity, but the Board stated that Patent Owner does not need to prove that Petitioner exercised control over Comcast sufficient for it to be deemed in privity with Comcast in order to compel production of the indemnification agreement. Patent Owner has provided evidence that the agreement exists, Comcast made indemnification claims against Petitioner, Petitioner had contractual rights with Comcast regarding exercising “sole control” of the litigation, and Petitioner resolved the indemnification claims with Comcast.  This evidence constitutes threshold evidence sufficient to deem the limited request of the indemnification agreement necessary in the interest of justice.  The Board also noted that an important consideration is that the request was made one month after Patent Owner received notice of filing of the Petition.  The Board further noted that it is not addressing the ultimate issue of whether Petitioner and Comcast were in privity.

Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746
Paper 15: Order Granting Patent Owner’s Motion for Additional Discovery
Dated: July 24, 2014
Patent 5,563,883
Before: Kristen L. Droesch, Kalyan K. Deshpande, and Miriam L. Quinn
Written by: Quinn